Delaware Patent Litigation Report : Delaware Intellectual Property Lawyer & Attorney : Morris James Law Firm : Delaware Patent Litigation Report

The first complaint was filed 8/8/06 and amended 9/9/06.  On 10/23/06 Defendant counterclaimed for declaratory judgment of noninfringement and invalidity.  The deadline for amending pleadings was 8/31/07.  Defendant amended its counterclaims to add a claim for correction of inventorship on 12/11/06.  The parties stipulated to amending deadline for amending pleadings to 10/8/07. A subsequent amended scheduling order pushed that deadline to 12/7/07.  The parties stipulated to Plaintiffs’ filing an amended complaint, which revised the amendment of pleadings deadline to 6/6/08.  Defendant answered on 1/2/08 without adding an inequitable conduct claim.  Plaintiff filed a third amended complaint, which Defendant answered on 6/23/08 adding a claim for unenforceability based on patent misuse and unclean hands.  The schedule was amended again on 11/13/08.  Defendant advised of its intent to assert inequitable conduct claims in a status conference on 10/15/08.  Defendant moved for leave to amend its answer, but before the opposition brief was filed, it announced it would seek to further amend based on deposition testimony from one of the inventors.  The schedule was amended again on 1/15/09.  Plaintiff asserts that the motion to amend was untimely and Defendant has not met the heightened “good cause” standard because it failed to timely pursue discovery.  The Court ruled that Defendant may amend to add well-pled counterclaims for inequitable conduct.  The scheduling order has been modified several times to serve the interests of both parties.  Defendant’s request is timely where it sought to amend shortly after it was able to satisfy Rule 9(b) pleading requirements and plaintiff is not prejudiced.  A new claim labeled “Other Prior Art” was not pled with particularity and therefore the motion to include that paragraph is denied.